- Google LLC v. Security First Innovations, LLCSome claims unpatentablePTAB · May 16, 2025 · IPR2024-00212 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1, 2, 5, 9, and 11–14 were held unpatentable as obvious over Tajima and Foster or Foster and Hayhurst; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“had at least a bachelor’s degree in computer science, computer engineering, or a related field, with three years of experience in the area of securing data from unauthorized access or use.” Pet. 4 (citing Bhattacharjee Decl. ¶¶ 41– 45). Petitioner further asserts that a “higher level of education may substitute for less experience.” Id. At the institution stage, Patent Owner did not oppose Petitioner’s assertions or provide a definition of a person of ordinary skill in the art. See generally Prelim. Resp.; Rubin I Decl. ¶ 20 (accepting Dr. Bhattacharjee’s proposed qualifications for the purposes of his declaration). We regarded Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our Institution Decision, we adopted Petitioner’s proposal. Institution Dec. 11. Post-institution, neither party has contested this description. See Rubin II Decl. ¶ 20 (accepting Dr. Bhattacharjee’s definition). For the reasons given, we maintain our previous description of the person of ordinary skill.” slip op. at 13
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Ex. 1005 ¶ 0111. Dr. Rubin testifies, succinctly, that “I do not believe that a [person of ordinary skill] would understand that Tajima uses the term ‘information regarding the key’ to refer to the key. If Tajima meant to say the ‘key,’ there would be no need to use the phrase ‘information regarding the key.’” Rubin II Decl. ¶ 41. He further testifies that “[w]hen Tajima wishes to refer to a ‘key,’ it does so directly” (citing many instances where Tajima makes explicit reference to keys). Id. ¶ 42 (citing Ex. 1005 ¶¶ 67, 70, 71, 75, 77, 86, 88, 89). We find Dr. Rubin’s reasoning on this issue persuasive. On the other hand, we find Dr. Bhattacharjee’s response less convincing. Bhattacharjee II Decl. ¶¶ 5–23. We find that he does not 5 Petitioner states that it does not rely on the doctrine of inherency to establish that this limitation is met by Tajima. Pet. Reply 2. understand that Tajima uses the terms “information regarding the key” and “key information” to refer to an encryption key. Id. ¶ 5 (citing Bhattacharjee I Decl. ¶ 103, 131). Lacking support for disclosure of an encryption key in Tajima itself, Dr. Bhattacharjee turns to other references, including Foster. Id. ¶¶ 7–9. Dr. Bhattacharjee testifies that “Foster’s use of the term ‘key information’ to describe information that includes the key and additional information . . . explains why Tajima did not just say ‘key’ when referring to the information attached to the data fragments.” Id. ¶ 8. Dr. Bhattacharjee’s testimony is unconvincing. In Foster, there is explicit disclosure of including the encrypted title key itself in the header extension. Ex. 1006 ¶ 66 (“As depicted, header extension 118 includes encrypted title key 112 . . . “). In contrast, Dr. Bhattacharjee cites no similar disclosure in Tajima. In fact, Dr. Bhattacharjee’s reliance on other references to support anticipation runs contrary to the rule that “[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987) (emphasis added). We do not find Dr. Bhattacharjee’s testimony based on Foster and other references convincing of anticipation by Tajima. Nor do we find Petitioner’s alternative obviousness challenge based on Tajima persuasive. Pet. 22. The Petition includes a single-sentence explanation of this obviousness contention: “Even if Tajima had not disclosed that its key information includes the corresponding key, that would have been an obvious and conventional way to implement what Tajima discloses—i.e., a system that needs only the key information to decrypt data fragments and not additional key management infrastructure.” Id. (citing paragraph 104 of his initial declaration mirrors the Petition and provides no record citations to support his opinion of obviousness. Such unsupported expert testimony is entitled to little weight. “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a); PTAB Consolidated Trial Practice Guide 40 (Nov. 2019) (“Trial Practice Guide”) (“Opinions expressed without disclosing the underlying facts or data may be given little or no weight.”).6” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Patent Owner responds that Petitioner “fails to demonstrate” a motivation to combine the references. PO Resp. 9. Patent Owner argues that “Tajima and Foster are directed to entirely different fields and to different problems.” Id. We disagree. As Petitioner points out, both Tajima and Foster are in the field of securing data, as is the ’116 patent. Pet. Reply 13–14 (citing Ex. 1005 ¶ 44; Ex. 1006 ¶ 3). Dr. Bhattacharjee testifies, “Tajima and Foster also both describe techniques for securing data using encryption and securely storing keys with encrypted data.” Bhattacharjee II Decl. ¶ 35 (citing Ex. 1005 ¶¶ 109–114; Ex. 1006 ¶¶ 64–71). Patent Owner argues Foster’s disclosure of a KEK would have been “redundant” to Tajima’s key-securing obfuscation technique. PO Resp. 18. We find this argument is unavailing. As Petitioner points out, Patent Owner’s argument “ignores Tajima’s vulnerability that Foster’s key-encryption addresses.” Pet. Reply 16. More specifically, “[r]equiring an attacker to obtain KEKs to decrypt Tajima’s encryption keys in addition to de-obfuscating them is not ‘redundant’ to only having to de-obfuscate them.” Pet. Reply 16 (emphasis omitted) (citing Bhattacharjee II Decl. ¶¶ 41–44). We find that Petitioner’s argument for combining the references is persuasive for the reasons given. Patent Owner further argues that Tajima and Foster address different problems and disclose solutions that are “fundamentally at odds.” PO Resp. 9–16, 25–27. Patent Owner asserts that “Foster’s system requires synchronizing the transmission of encrypted content packets with the keys used to encrypt those packets, so that each packet can be viewed immediately upon receipt.” Id. at 15 (emphasis omitted). Patent Owner attaching it to a different data fragment, the problem Foster sought to solve is the ‘need . . . for a key used to encrypt content to be itself encrypted, and transmitted as an integral part of the [same] content.’” Id. (alterations in original) (citing Ex. 1006 ¶ 7). We are not persuaded by this argument. As noted supra, for the reasons given, we find that both Tajima and Foster are in the field of securing data from unauthorized access. Pet. Reply 13. Furthermore, as Petitioner points out, we find that in Petitioner’s combination of Tajima and Foster, Tajima’s data (which does not require synchronization) is secured, not Foster’s. See Pet. 34–36 (providing reasons for encrypting Tajima’s keys); Pet. Reply 17–18 (“Synchronization of Foster’s data is irrelevant to Tajima-Foster because Tajima-Foster does not restore Foster’s data.”). Thus, we find that Patent Owner’s argument based on the need to synchronize Foster’s data for streaming is unavailing. We have considered Patent Owner’s other arguments and find them lacking. See, e.g., Patent Owner’s Sur-reply, which repeats the arguments that Tajima and Foster are in a “different field,” “fundamentally at odds,” “[i]n direct contrast,” and that applying Foster’s KEK teachings to Tajima would be “redundant.” PO Sur-reply 2–9. For reasons already discussed, we find these arguments unconvincing. In sum, we find for the reasons given that Petitioner has proved by a” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayMotivation not foundNot shown unpatentable
“Dr. Rubin explains that Kerckhoff’s Principle “holds that a cryptosystem should be secure, even if everything about the system, except the key, is public knowledge.” Rubin II Decl. ¶ 94. Citing this testimony, Patent Owner argues, “Shyu’s anti-piracy system is a prototypical attempt to achieve security through obscurity, to the extent it proposes to conceal or obscure the encryption algorithms.” PO Resp. 33. Petitioner does not persuasively respond to this argument. Pet. Reply 20–21. Petitioner argues that “Shyu does not use secret algorithms.” Id. at 20. Instead, according to Petitioner “Shyu selects from among known algorithms to secure different data segments.” Id. However, we find Shyu’s disclosure that “the scrambling algorithm and the key word for the source data are dynamically changed to effectively guard against piracy” is telling evidence that the underlying algorithms themselves are not secure, and therefore Kerckhoff’s principle applies here. See Ex. 1016, 1:37–39. We also find persuasive reasoning in Patent Owner’s assertion that “[c]ombining associated with maintaining multiple encryption algorithms and tracking encryption algorithm ‘metadata,’ without providing any substantial security.” PO Resp. 34–35. In sum, for the reasons given, we agree with Patent Owner that Petitioner fails to prove sufficiently that a person of ordinary skill would have been motivated to combine Tajima and Rivest. Further, Petitioner fails to demonstrate that even assuming that Tajima and Rivest would have been combined, a person of ordinary skill would have further combined their teachings with Shyu.” slip op. at 25
Patent outcomesUS 11,178,116 mixed§ 103 obviousnesscites PhillipsPatents in suitUS 11,178,116 - Google LLC v. Security First Innovations, LLCAll claims unpatentablePTAB · May 16, 2025 · IPR2024-00215 · APJ Jason M Repko · IPR · Final written decision
Claims 1–10 are unpatentable as obvious over Foster and Hayhurst; the Board did not reach the anticipation and obviousness grounds based on Orsini.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“had at least a bachelor’s degree in computer science, computer engineering, or a related field, with three years of experience in the area of securing data from unauthorized access or use.” Pet. 6 (citing Ex. 1003 ¶¶ 37–38). Petitioner also asserts that a “higher level of education may substitute for less experience.” Id. 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. Patent Owner submitted the Declaration of Dr. Rubin in support of its Response, and in that Declaration, Dr. Rubin accepted Petitioner’s definition. Ex. 2033 ¶¶ 20–21. For the reasons given, we apply the same level of ordinary skill in the art that we did in the Institution Decision. Inst. Dec. 4.” slip op. at 6
- Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed
“See Section II.C.3.a.ii supra. Although Dr. Rubin calls Hayhurst’s security benefits “ancillary” (Ex. 2033 ¶¶ 108–109, quoted in PO Resp. 40), this does not align with Hayhurst (see Ex. 1007 ¶¶ 2, 7, 8, 21). For example, Hayhurst describes the security measures in the Technical Field section (id. ¶ 2) and the Summary of the Invention section (id. ¶¶ 7, 8). Hayhurst also discusses piracy deterrence in both the Summary of the Invention section (id. ¶ 8) and the invention’s detailed description (id. ¶ 21). Because Dr. Rubin does not give sufficient weight to Hayhurst’s discussion of piracy deterrence and security, we do not credit Dr. Rubin’s testimony on this issue. See Ex. 2033 ¶¶ 108–109. Thus, we agree with Petitioner that Hayhurst is reasonably pertinent to the network-security problem that the inventors were trying to solve. See Reply 5–6.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Neither party explicitly proposed constructions during trial, and we do not see the need for construing any terms in this Decision.” slip op. at 8
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“3. Claim 1 a. Analogous Art “To be considered within the prior art for purposes of the obviousness analysis, a reference must be analogous.” Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fed. Cir. 2015) (citing Wang Lab. v. Toshiba Corp., 993 F.2d 858, 864 (Fed. Cir. 1993)). “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the pertinent to the particular problem with which the inventor is involved.” Sanofi-Aventis Deutschland Gmbh v. Mylan Pharms. Inc., 66 F.4th 1373, 1377 (Fed. Cir. 2023) (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citations omitted)).” slip op. at 9
Patent outcomesUS 10,452,854 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,452,854 - Lenovo (United States) Inc. / Dell Inc. et al. v. Universal Connectivity Technologies, Inc.Institution deniedPTAB · Apr 17, 2025 · IPR2024-01482 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution on claims 1, 2, 4, 8–10, 12, 13, 15, 18–20, and 25, exercising § 314(a) discretion after balancing the Fintiv factors and finding the merits not particularly strong.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied
“partes review “allays concerns about inefficiency and duplication of efforts,” and strongly weighs against exercising our authority to deny institution. Fintiv, Paper 11 at 6. Of the three district court proceedings, the Lenovo Group case, pending in the Eastern District of Texas, is the most significant to our analysis here. In the Lenovo Group case, Lenovo Group has not requested a stay. Prelim. Resp. 16. Patent Owner argues that the Lenovo Group case is not likely to be stayed based on that court’s low grant rate in other cases and the progress of that case in particular. Id. at 17. The district court in the HP case denied a stay without prejudice and stated that a stay could be reconsidered in the future depending on the outcome at the PTAB. Prelim. Reply 3. The Dell case has been stayed. Id. On this record, we decline to speculate as to how any of the involved district courts where no stay is pending might rule on any future motion to stay. Thus, we determine that, while one stay has been granted, the lack of a stay in the other underlying district court cases, especially the Lenovo Group case, is not sufficiently persuasive to weigh this factor against exercising discretion. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative), cautions against speculating whether the district court would grant a stay if one were requested. Therefore, this factor has a neutral effect on the overall balancing of the Fintiv factors. B. Proximity of Trial Date to Projected Statutory Deadline (Factor 2) The scheduled trial date for the Lenovo Group case is November 3, 2025, which is about six months prior to the expected date for the final written decision here (i.e., late April 2026). See Prelim. Resp. 20; IPR2024- 01429, Ex. 2002 (Lenovo Group case Docket Control Order), 1. Petitioner argues this trial date is uncertain. Prelim. Reply 3. Further, Petitioner focuses its argument on what it terms a “growing backlog” in the Eastern District of Texas and “associated scheduling uncertainty.” Id. at 4. Petitioner refers to the status of the HP case, which is currently set for trial on September 21, 2026, and the stay in the Dell case. Id. Patent Owner responds that “[b]oth the scheduled trial date and the date of trial [in the Lenovo Group case] based on median time-to-trial statistics occur months before a final written decision would be expected here.” Prelim. Sur-reply 4. Patent Owner asserts that the time-to-trial statistics for the Eastern District of Texas project a median time-to-trial of 21.9 months. Prelim. Resp. 20–21 (citing Ex. 2007, U.S. District Courts Federal Court Management Statistics–Profiles—September 30, 2024). This projection yields a trial date that is prior to the expected final written decision date of April 2026. Prelim. Sur-reply 4. As with the previous factor, the status of the Lenovo Group case is our focus here. As stated, that trial is set to occur about six months before a final written decision would issue in this proceeding. The district court has stated that this trial date setting “cannot be changed without an acceptable showing of good cause.” Prelim. Resp. 20. We are not persuaded by Petitioner’s unsupported argument that the trial date is uncertain. We also consider the fact that the median time-to-trial statistic discussed by both parties projects a trial date earlier than the actual date set by the district court. Ex. 2007; Prelim. Sur-reply 1. The fact that the time-to-trial statistic is earlier than the trial date set in the Lenovo Group case confirms that the schedule set by the district court is credible and should be given weight. From this evidence, we are persuaded that we should rely on the trial” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“E. Conclusion Regarding the Merits Petitioner does not present particularly strong merits. Petitioner’s arguments on the “bus limitation,” to succeed at trial, would require addressing a claim construction issue that was never addressed in the Petition and is arguably contradicted by the ’520 patent, which discloses transmitting packets representing a plurality of different control signals on a single bus. See Prelim. Sur-reply 2 (citing Ex. 1001, 7:34–38, 9:23–25, 9:50–54). Similarly, prevailing on the “modified protocol” issue would require proving that the HDMI–C protocol, which uses the same separate channel arrangement for CEC and DDC as standard HDMI, is sufficiently “modified” to meet the claim. Taking into account Patent Owner’s persuasive arguments supra in response, and for the reasons given, we do not find the merits of Petitioner’s position on either of these dispositive issues to be particularly strong.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner submits that it “for the purposes of this proceeding, the terms of the challenged claims should be given their plain and ordinary meaning, and no terms require specific construction.” Pet. 8. Patent Owner does not dispute Petitioner’s position that no terms require construction. Prelim. Resp. 11–12. We determine there are no claim terms that need to be expressly construed for this Decision.” slip op. at 15
- Skill levelDecided for patent owner
“Patent Owner states that a person of ordinary skill “would have the equivalent of a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training and three years of work experience with data communications systems or interfaces, including at least some experience with serial or display data communications systems or interfaces .” Prelim. Resp. 12. The differences between these nearly-identical definitions are minor and immaterial to our decision. We regard either description as consistent with the challenged patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill).” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 7,856,520 - Dell Inc. / Dell Technologies Inc. et al. v. Universal Connectivity Technologies Inc.Institution deniedPTAB · Apr 7, 2025 · IPR2024-01479 · APJ Miriam L Quinn · IPR · Institution
The Board denied institution of IPR on claims 1, 4–5, 8, 11, and 14–16 based on Fintiv balancing, including the earlier district court trial date and weak merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“is our focus here. As stated, that trial is set to occur about six months before a final written decision would issue in this proceeding. The District Court has stated that this trial date setting “cannot be changed without an acceptable showing of good cause.” Prelim. Resp. 8. We are not persuaded by Petitioner’s unsupported argument that the trial date is speculative. We also consider the fact that the median time-to-trial statistic discussed by both parties projects a trial date of July 2025, earlier than the actual date set by the District Court. Ex. 2007; Prelim. Resp. 8; Reply 3. The fact that the time-to-trial statistic is earlier than the trial date set by Judge Gilstrap confirms that the schedule set by the District Court is credible and should be given weight. From this evidence, we are persuaded that we should rely on the trial date in the Lenovo Group litigation as the main indicator of a trial court reaching the merits of the invalidity of the patent-at-issue before we issue a final written decision. Accordingly, this factor strongly favors exercising discretionary denial.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayNot reached
“First, Iwamoto’s “standby” mode is chosen specifically to avoid malfunction as explained above, and selecting a default mode of operation that bypasses the standby mode would undermine the stated purpose of Iwamoto’s standby mode. See, e.g., Depuy Spine, Inc. v. Medtronic Sofamor Danek, 567 F.3d 1314, 1326 (Fed. Cir. 2009) (“An inference of” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“c) Knight5 Knight describes power source negotiation in a power management system. Ex. 1007 ¶ 4. Knight discloses that if the internal battery or external power source has sufficient power, it can connect with another device as a power source, otherwise, it attempts to connect as a power sink. Id. ¶ 42. The Petition does not explain a reason to combine Knight’s power 5 U.S. Pat. Pub. No. US 2008/0028237 A1, filed July 26, 2006. (Exhibit 1007, “Knight”). or Hsieh. Pet. 60. Grounds based on Knight are unpersuasive for at least this reason.” slip op. at 15
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,232,265 - HP Inc. / Dell Technologies Inc. et al. v. Universal Connectivity Technologies, Inc.Institution deniedPTAB · Apr 7, 2025 · IPR2024-01428 · APJ Miriam L Quinn · IPR · Institution
The Board denied institution on claims 1-3, 5, 7-10, 12, 14-17, 20-23, and 26 under its Fintiv analysis, finding the parallel trial date and other factors favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“is our focus here. As stated, that trial is set to occur about six months before a final written decision would issue in this proceeding. The District Court has stated that this trial date setting “cannot be changed without an acceptable showing of good cause.” Prelim. Resp. 46. We are not persuaded by Petitioner’s unsupported argument that the trial date is speculative. We also consider the fact that the median time-to-trial statistic discussed by both parties projects a trial date of July 2025, earlier than the actual date set by the District Court. Ex. 2001; Prelim. Resp. 46; Reply 5. The fact that the time-to-trial statistic is earlier than the trial date set by Judge Gilstrap confirms that the schedule set by the District Court is credible and should be given weight. From this evidence, we are persuaded that we should rely on the trial date in the Lenovo Group litigation as the main indicator of a trial court reaching the merits of the invalidity of the patent-atissue before we issue a final written decision. Accordingly, this factor strongly favors exercising discretionary denial.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Finally, Petitioner argues obviousness over each of Banes and Calvignac. These assertions of obviousness rely on testimony on the understanding of a person of ordinary skill in the art of the “spare” code and flags as “out-of-band symbols.” Pet. 20−21. Petitioner also argues that it was “well-known” to include in-band symbols in data packets and to include out-of-band symbols in control indicators to obtain the benefit of allowing data payload information to be readily distinguished from control information. Pet. 63−64. The testimony cited in support relies on the disclosure of Shin ’464 for this statement.5 Ex. 1003 ¶ 225. The exact same disclosure of an 8-bit encoding technique that uses in-band and out-of-band symbols within a transmission is found in another Shin patent that is incorporated by reference in the ’905 patent and has overlapping inventors. Ex. 1006, 9:60−10:8, Ex. 1008, 5:15−28, Ex. 1001, 24:50−55. In other words, the alleged benefit may be better characterized as part of the inventor team’s work rather than a technique “well-known” in the art. And for this reason, Petitioner’s obviousness contentions are less persuasive. 5 U.S. Patent No. 5,974,464, filed September 30, 1996. (Ex. 1006, “Shin ’464”).” slip op. at 15
§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 7,154,905 - BMW Of North America, LLC / Robert Bosch LLC et al. v. Foras Technologies Ltd.All claims unpatentablePTAB · Mar 18, 2025 · IPR2023-01373 · APJ Carl W Whitehead Jr · IPR · Final written decision
Claims 1–8 and 13–22 are unpatentable as obvious over Bigbee and Nguyen because the combination teaches determining whether lockstep is recoverable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We regarded Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our Institution Decision, we adopted Petitioner’s proposal. Institution Dec. 8–9. In its Response, Patent Owner does not take exception to our definition. See PO Resp. 3. However, Patent Owner asserts that a person of ordinary skill in the art “would have the equivalent of a bachelor’s degree in Computer Science, Computer Engineering (or a related field) and approximately two years of work experience with computer architecture design.” Id. We find Patent Owner’s and Petitioner’s definitions of a person of ordinary skill in the art are not meaningfully distinguishable from one another. Accordingly, we do not see the need to modify our adoption of Petitioner’s proposed level of ordinary skill in the art. However, our findings would not change even under Patent Owner’s proposed level of skill in the art.” slip op. at 13
- Expert testimonyPatent owner expert creditedDecided for patent owner
“We are satisfied that Mr. Jones qualifies as a person of ordinary skill in the art. See, e.g., Ex. 2008, 1 (“Summary” including “embedded systems including both software and hardware”, “Representative Design Work” including, e.g., “Design and implement multiple device drivers for complex Integrated circuits,” “Design of a highly fault tolerant, distributed data acquisition and control, system for a rebreather . . . system architecture, hardware design and layout, embedded firmware, documentation,” “hardware and firmware design,” “[h]ardware and firmware for controlling a unique, battery powered diesel burner…”), 2–3 (list of Publications). We are also satisfied that Mr. Jones’ degree in Electrical and Mechanical Engineering is sufficiently “equivalent” to a degree in Computer Engineering or Computer Science. See PO Sur-reply 11. We decline to give Mr. Jones’ declaration no weight for several additional reasons. One, Petitioner has not moved or otherwise sought to exclude Mr. Jones’ declaration, nor has Petitioner filed an objection. See Pet. Reply 2–5; see also Hearing Tr. 32, 33:15–34:8. Two, we are afforded broad discretion in assigning weight that is to be accorded expert testimony. See Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (“[T]he Board was well within its discretion to give more credibility to [one expert over another] unless no reasonable trier of fact could have done so.”); see also CTPG5 34–36. In sum, Petitioner has not persuaded us that Patent Owner’s expert’s testimony should be given no weight because Mr. Jones is not qualified as a person of ordinary skill in the art according to our definition. See Pet. Reply 2–5; see also PO Sur-reply 10–13. 5 Patent Trial and Appeal Board Consolidated Trial Practice Guide (CTPG) (Nov. 2019) (available at https://www.uspto.gov/TrialPracticeGuideConsolidated).” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner did not challenge Petitioner’s position on these terms. See Prelim. Resp. 1–13. We determined there were no claim terms that needed to be construed in our Institution Decision. See Institution Dec. 9– 10. Post-institution, Patent Owner does not dispute Petitioner’s construction of these terms and “does not believe either term requires construction, because . . . Petitioner fails to demonstrate obviousness regardless of how these terms [(“lockstep is recoverable” and “loss of lockstep is recoverable”)] are construed. PO Resp. 2. We agree with Patent Owner that no claim construction is necessary for purposes of this Decision. That is, we do not discern any claim terms that are in controversy on the full record. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find Mr. Jones’ testimony amounts to conjecture because it is unsupported by evidence, for the reasons explained by Petitioner. See Pet. Reply 10–11; Ex. 2007 ¶ 32; see 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight”). However, we find that Dr. Brogioli provides sufficient persuasive evidence as to how firmware FRC logic would be used and modified in the Bigbee/Nguyen combination. See Ex. 1002 ¶¶ 57–58, 96–98. As discussed above, Bigbee uses firmware FRC logic to check for an error within a processor core. See Ex. 1005 ¶¶ 35–37, Fig. 4A. Bigbee’s firmware FRC logic does not determine if lockstep is recoverable. Id. Similar to Bigbee, Nguyen also uses firmware FRC logic to check for an error within a processor core. See Ex. 1006 ¶¶ 9, 18, Fig. 7. However, the difference is that Nguyen’s firmware FRC logic determines if lockstep is recoverable. Id. We find for the reasons given by Petitioner and Dr. Brogioli including those summarized supra, that it would have been obvious to one of ordinary skill in the art to modify Bigbee by implementing Nguyen’s determination in firmware. Pet. 33–35 (citing, e.g., Ex. 1002 ¶ 94 (stating that “[i]mplementing logical steps in firmware was known in the art”); ¶ 95 (stating that Bigbee’s system “is compliant with well-known industry standards”); ¶ 98 (stating that “firmware is flexible” and “can be modified after production, updated, and supported relatively quickly and inexpensively.”)). In contrast, Patent Owner’s arguments fail to convince us that a person of ordinary skill in the art, having knowledge of Nguyen’s teaching of determining lockstep recovery, would not have able to modify Bigbee’s firmware FRC logic to determine if lockstep is recoverable. See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”); see also id. at 418. Accordingly, Petitioner has presented reasoning, with rational underpinnings, that a person of ordinary skill in the art would have had reasons to modify Bigbee’s firmware FRC logic based upon Nguyen’s teachings and would have had a reasonable expectation of success in doing so. Accordingly, we find for the reasons given that Petitioner demonstrates by a preponderance of the evidence that this element is taught or suggested by the Bigbee/Nguyen combination.” slip op. at 29
Patent outcomesUS 7,502,958 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,502,958 - PTAB · Mar 13, 2025 · IPR2024-01281 · APJ William V Saindon · IPR · Institution
The Board instituted IPR on all challenged claims and grounds after finding a reasonable likelihood that claim 13 would have been obvious over Cornett, Paatela, and Nelson.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). A claim is unpatentable under 35 U.S.C. § 103 if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious . . . to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) when in evidence, objective indicia of non-obviousness. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966).” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A Person of Ordinary Skill in The Art (“POSITA”) in Sept. 2007 would have had a working knowledge of network communications techniques and highspeed packet processing technologies. Ex.1003, ¶20. A POSITA would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent training, and approximately two years of work experience in network communications. Lack of work experience can be remedied by additional education, and vice versa. Ex.1003, ¶20. Pet. 13. We use this definition for purposes of this Decision because it appears consistent with the level of skill reflected in the prior art and the ’471 patent.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that no terms require express construction. Pet. 13. We do not expressly construe any terms at this time. Realtime, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“As to the claim requirement that the direct memory access device concurrently write the packet buffer memory and the protocol stack layer memory, Petitioner asserts that neither Cornett nor Paatela explicitly describes the timing of packet writing. Pet. 42. Petitioner asserts, however, that Nelson discloses writing a packet header separately and in parallel with writing the entire packet. Id. (citing Ex. 1006, 6:66–7:4; Ex. 1003 ¶ 89). Indeed, Nelson explains that the parallel storage action “avoid[s] having to read the frames out of the [larger frame] buffer” when reading a header, which eliminates the need for a separate reading step and “allows the routing decision to be made before the [frame] buffer becomes available.” Ex. 1006, 2:1–22 (containing the quoted language), 7:1–4 (describing “parallel . . . storage”). Petitioner asserts that it would have been obvious to write the packet header at the same time as writing the entire packet in Cornett, because Cornett, Paatela, and Nelson are concerned with speed, and writing in parallel would increase speed (vs. writing serially). Id. at 43–44 (citing Ex. 1003 ¶ 90); see also id. at 26 (similar argument). Reviewing Petitioner’s position with respect to independent claim 13, we determine that Petitioner has addressed each limitation in sufficient detail and with adequate citations to the record. Petitioner has also provided sufficient reasons for combining the teachings of Cornett, Paatela, and Nelson with a reasonable expectation of success. Reviewing the record before us, we determine that Petitioner has established a reasonable likelihood of success in showing that claim 13 would have been obvious in view of Cornett, Paatela, and Nelson.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,738,471 - PTAB · Mar 7, 2025 · IPR2024-01347 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR of claims 1–27 on all grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). We must also consider the non-exclusive factors set forth in Becton, Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential in relevant part), which “provide useful insight into how to apply the framework” under § 325(d). Advanced Bionics, Paper 6 at 9. Those non-exclusive factors include: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and” slip op. at 13
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesNo construction neededOther
“1. Means-Plus-Function Terms Challenged claim 26 recites elements using the word “means.” See Ex. 1001, 21:6–22:5. The use of the word “means” in a claim element creates a rebuttable presumption that 35 U.S.C. § 112 ¶ 6 applies.9 See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). Construing a means-plus-function claim term is a two-step process. We must first identify the claimed function. Then, we must determine what structure, if any, disclosed in the specification corresponds to the claimed function. Id. at 1351 (citation omitted). The parties do not dispute that 35 U.S.C. § 112 ¶ 6 applies to those “means” elements recited in claim 26. See Pet. 6–8; see generally Prelim. Resp. a. “system firmware means for detecting loss of lockstep (LOL) for a processor in a multi-processor system” (Claim limitation [26a])” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that these terms “should be construed to include both mismatch errors and errors that may eventually result in mismatch errors constituting a ‘precursor to lockstep mismatch’—including at least one of (1) detecting a lockstep mismatch error; and (2) detecting an error that may eventually cause a lockstep mismatch error.” Pet. 6. Petitioner asserts that “[t]he specification provides detecting these two types of errors as examples of detection of LOL.” Id. (citing Ex. 1001, 2:40–3:6, 7:25–36; Brogioli Decl. ¶¶ 34–36). Petitioner further asserts that this construction “is consistent with the undisputed construction in the IPR challenging U.S. Patent No. 7,502,958.” Id. (citing BMW of N. Am., LLC v. Foras Techs. Ltd., IPR2023-01373, Paper 18 at 2 (PTAB July 12, 2024)). Patent Owner does not dispute Petitioner’s position or discuss claim construction in the Preliminary Response. meaning of these claim terms that would affect this Decision. Therefore, we determine that at this stage, we do not need to expressly construe these claim terms to resolve a controversy. 3. Summary and Conclusion For the reasons given, we determine that at this stage, we do not need expressly to construe any claim term for this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., 200 F.3d at 803)).” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“alleged invention “would have at least a bachelor’s degree in computer science, computer engineering, or equivalent, and at least two years of prior work experience with computer architecture design, including fault-tolerant computer architecture design,” and “[a]dditional education could substitute for professional experience and vice versa.” Pet. 4 (citing Brogioli Decl. ¶¶ 28–30). At this stage, Patent Owner does not respond to this contention. For the purpose of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’302 patent specification and the asserted prior art.” slip op. at 27
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,624,302 - PTAB · Mar 7, 2025 · IPR2024-01346 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR on claims 1–30 and all petition grounds, finding a reasonable likelihood of unpatentability based on Fox, Safford, and Arai, with or without Landry.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“As can be seen in the discussion above and the analysis of Petitioner’s grounds below, Arai and Landry are significant to Petitioner’s challenges. Because the Office did not previously consider all of the prior art references or combinations of references relied on in the Petition, including Arai and Landry, and because Arai and Landry are not the same or substantially the same as the art that was previously considered, we determine the Office did not previously consider the same or substantially the same prior art as is relied on in the Petition.8 Further, we find that there is not a substantial overlap, if any, between the arguments made during examination and the manner in which Petitioner relies on the prior art, including Arai and Landry, as discussed above. Therefore, part one of the Advanced Bionics framework is not met, and we need not proceed to part two of the Advanced Bionics framework. See Advanced Bionics, IPR2019-01469, Paper 6 at 8.” slip op. at 24
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons provided below, we determine, based on the record before us, there is a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable. Furthermore, we deny Patent Owner’s request that we exercise our discretion to deny institution in this proceeding under 35 U.S.C. § 325(d). We therefore institute inter partes review on all challenged claims and all grounds. See” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Motivation to Combine Fox, Safford, and Arai and Fox, Safford, Landry, and Arai Petitioner asserts that a person of ordinary skill “would have found it obvious to combine Fox’s multiprocessor system with Safford’s lockstep processor and error detection logics and Arai’s processor-switching implementation details.” Pet. 10. Dr. Brogioli testifies that “[a person of ordinary skill] would have been motivated to implement the processors in Fox as lockstep processors to improve reliability and availability of Fox’s server system for critical processes, for which higher reliability and availability of the system are desired.” Brogioli Decl. ¶ 90. He further testifies that “[a person or ordinary skill] also would have been motivated to implement in Fox the error detection logics that detect loss of lockstep together with the lockstep processors as taught by Safford to implement lockstep functions and further improve availability of the system.” Id. He testifies that “[a person of ordinary skill] would have understood how to implement Fox’s processors as lockstep processors with error detection logics and expect success. [A person of ordinary skill] would only have applied well-known configurations and ordinary hardware and software configuration skills.” Id. ¶ 91. Dr. Brogioli provides additional reasons motivating the combination. Id. ¶¶ 92–99. Petitioner contends that “Arai discloses switching the role of a failing processor with a spare processor.” Pet. 10. Dr. Brogioli testifies that “[a person of ordinary skill] would have been motivated to incorporate Arai’s teaching of transferring processor context from the failing processor to the spare processor not to interrupt the operating system and its running applications as desired by Fox.” Brogioli Decl. ¶ 109. He reasons that “[a person of ordinary skill] would have understood that incorporating Arai’s benefit of switching the role of the failing processor to the spare processor without affecting the operating system and running applications, which is expressly taught as desirable by both Fox and Arai and well known in the art.” Id. ¶ 110. Petitioner asserts that a person of ordinary skill also would have been motivated to further combine these references with Landry. Pet. 33–35. Dr. Brogioli testifies that “Landry discloses a fault-tolerant boot process that dynamically designates a functional CPU as logical CPU0 that performs the unique functions of a boot processor.” Brogioli Decl. ¶ 147. He testifies further that “[a person of ordinary skill] would have understood Landry’s process would have been a suitable option for selecting a boot processor in Fox’s system consistent with the initialization protocol of the IA-32 multiprocessor system.” Id. He asserts that “[a person of ordinary skill] would have understood the benefits of implementing Landry’s boot processor selection process in Fox.” Id. ¶ 148. Among other reasons, “[a person of ordinary skill] would have further understood that using the logical CPU0 as the identification for the boot processor allows for transparent replacement of the physical processor experiencing a failure with another processor without interrupting the operating system.” Id. At this stage, Patent Owner does not respond to these arguments by Petitioner or refute the testimony by Dr. Brogioli. On this record, we find that Petitioner has sufficiently demonstrated a motivation to combine Fox and Safford with Arai and to further combine these references with Landry with a reasonable expectation of success.” slip op. at 29
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We are not aware of any controversy between the parties over the meaning of these claim terms that would affect this Decision. Therefore, we determine that at this stage, we do not need to expressly construe these claim terms to resolve a controversy.” slip op. at 26
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,627,781 - PTAB · Mar 5, 2025 · IPR2024-01357 · APJ Daniel Kazhdan · IPR · Institution
The Board instituted IPR on claims 1–3, 6, 7, 9, 10, 16–21, 25, 26, and 29 on all four obviousness grounds, finding a reasonable likelihood of success on at least one ground.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We find that this factor marginally favors Petitioners. Fintiv explains that the fact that a “district court has denied a motion for stay without prejudice” and has indicated on the record “that it will consider a renewed motion or reconsider a motion to stay if a PTAB trial is instituted” “has usually weighed against exercising authority to deny institution.” Fintiv, Paper 11 at 6–7. That is what happened here. When the district court denied Petitioner Savant’s motion for a stay in the Ohio litigation, it stated that, “[i]f the Patent Trial and Appeal Board accepts the petition for inter partes review, the parties may rebrief this issue.” See No. 1:24-cv-473 (N.D. Ohio) December 12, 2024, Order. Ex. 1025. Thus, this factor weighs marginally against exercising discretion to deny institution.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“prevail in showing that it would have been obvious to use blue light with a wavelength that is greater than 440 nm. Basin-2007 does not specify a specific wavelength for the blue light, but, as Patent Owner acknowledges, “blue light is generally emitted in the range of 380 to 500 nm.” Prelim. Resp. 55; see Ex. 1002 ¶ 121. Thus, the question is whether a skilled artisan, when looking for which wavelength to use, would have found it obvious to use anything in the half of the blue-light range that is greater than or equal to 440 nm. On its own, this overlap in ranges would be strong evidence of obviousness. See Galderma Lab’ys, L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013). Petitioners show even more. Basin-2005 discloses that there is an “assum[ption]” that blue-light LEDs emit “in the range of 420-490 nm.” Ex. 1006 ¶ 30 (cited in Pet. 25). Basin-2005 additionally teaches that its “blue, UV, or near UV LED[s]” are “relatively easy to implement and consistently produce[] the desired white light temperature.” Id. ¶ 6 (cited in Pet. 25). Furthermore, Shimizu and Stokes indicate that people were using higher wavelength blue-light in their LEDs. See Pet. 8, 24–25 (citing sources). Because a skilled artisan would have needed to select some wavelength for the blue light disclosed in Basin-2007, at this stage, we conclude that the skilled artisan would have found it obvious to include wavelengths from the higher end of the range—as disclosed in so many references. Basin-2007 discloses using a “conventional white light LED.” See Ex. 1005 ¶ 21. As evidenced by Shimizu and Stokes, the conventional white light LED sources used blue light with wavelengths greater than or equal to 440 nm. See Ex. 1002 ¶ 121 (citing sources). Patent Owner argues that “quantum efficiency” considerations would lead to using lower wavelengths, but Patent Owner does not explain why these same considerations did not convince Basin-2005, Shimizu, or Stokes to use lower wavelengths. Based on our review of the current record, we find that Petitioner has demonstrated a reasonable likelihood of proving that the combined teachings of Basin-2005 and Basin-2007 render claim 1 unpatentable as obvious.” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill in the Art According to Petitioners, [A person of ordinary skill in the art] would have had an undergraduate degree (i.e., B.S., B.S.E. or the equivalent) in electrical engineering, materials science, physics, or a similar discipline. A [person of ordinary skill in the art] would also have one to two years of experience in the field of LED packaging design. More education could substitute for experience, and vice versa. Pet. 6. For purposes of institution, “Patent Owner takes no position with respect to Petitioner’s proposed level of ordinary skill in the art.” Prelim. Resp. 36–37. At this stage, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioners and applied by Patent Owner as consistent with the prior art before us in this proceeding.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We determine that the plain and ordinary meaning of “light diffusing layer” is exactly what it says: “a layer that diffuses light.” The claims separately recite one function for this layer: it must “improve[] an off-state white appearance of the wavelength conversion component.” Ex. 1001 at 26:15–17; see id. at 27:25–27. That is all.” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,604,678
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.